Friday, December 09, 2011

On December 7, 2011, the CAFC heard oral argument [mp3 here] in an appeal (Appeal No. 2010-1376) from the TTAB's decision in Bridgestone Firestone North American Tire, LLC and Bridgestone Corporation v. Federal Corporation, Opposition No. 91168556 (February 24, 2010) [not precedential]. Despite the identity of goods (tires), channels of trade, and classes of customers, the Board dismissed this Section 2(d) opposition to registration of the mark MILANZA in stylized form, finding the mark not likely to cause confusion with the registered marks POTENZA and TURANZA. "[T]he dissimilarity of the marks simply outweighs the other relevant factors," said the Board.

Appellant Bridgestone argued that the Board had missapplied the CAFC's decision in Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002), and as a result failed to find the marks POTENZA and TORANZA to be famous or strong. The Board ruled that the house mark BRIDGESTONE was always used with POTENZA and TORANZA, which undermined the evidence of fame. In short, the Board found "nothing in the record to demonstrate that the marks ... have achieved significant recognition independent of the BRIDGESTONE mark." Bridgestone argued that, under Bose, the house mark was sufficiently uncoupled from the POTENZA and TORANZA marks that these two marks create their own commercial impressions, separate and apart from the house mark.

As to the marks, the Board found that POTENZA means "power" in Italian. TURANZA "engenders the commercial impression of touring." MILAN suggests something from Milan. On appeal, Bridgestone asserted that the Board ascribed meanings to POTENZA and TORANZA that were not supported by record evidence.

Appellee Federal first faced this uncomfortable question: why did your client choose a mark that is pretty close to a mark that's already out there? Appellee answered that it chose the mark because it wanted an association with Milan (although its tires are not made in Milan). It asserted that the marks POTENZA and TORANZA pale in the shadow of the strong BRIDGESTONE mark.

The panel discussed the standard of appellate review, with one judge stating that he never understand how the standard is to be applied: the underlying factual findings are reviewed with deference under the susbstantial evidence standard, but then the ultimate judgment on likelihood of confusion is de novo.